SmithKline Beecham plc, SmithKline Beecham (SWG) Ltd and SmithKline Beecham (Ireland) Ltd (plaintiffs) v Antigen Pharmaceuticals Ltd (defendant).

Intellectual Property - Trade mark - Whether defendant using a sign which was likely to be associated with the plaintiffs' trade mark - Trade Marks Act 1996, section 14 (2).

Tort - Passing off - Products only available on request from a pharmacist - Whether pharmacists likely to be confused by similarity of packaging.

Injunction Interlocutory - balance of convenience - Whether survey evidence of value in assessing the possible loss to the plaintiffs

The High Court (Mr Justice McCracken); judgment delivered 25 March 1999.

There was a serious issue to be tried as to whether the name and packaging of the defendant's product so resembled the trade marks owned by the plaintiffs that associations between the sign and the trade mark were evoked merely on the basis of this resemblance, and as to whether the products were so likely to be confused as to amount to passing off by the defendant. However, the balance of convenience favoured the defendant since the plaintiffs were not able to show any instance of confusion since the defendant's product had come onto the market.

Mr Justice McCracken so held in refusing an application for interlocutory injunctions to restrain infringement of the plaintiffs' trade marks and to restrain passing off.

Richard Law Nesbitt SC and Michael Howard BL for the plaintiffs; Donal O'Donnell SC and Denis McDonald BL for the defendant.

Mr Justice McCracken said that this was an application for interlocutory injunctions restraining the defendant from passing off its goods as goods of the plaintiffs and also from infringing the plaintiffs' trade marks.

The plaintiffs distributed and marketed an analgesic under the name "Solpadeine" and they claimed that it was the leading analgesic sold in Ireland. It was sold in three forms, namely, capsules, tablets and soluble tablets, and since at least 1990 had been marketed in a red box with the word "Solpadeine" appearing in white type with two yellow lines underneath the word. On the front of the box was a zigzag device in yellow with two white pills appearing on it. Since 1997, the device had been altered so that it appeared only half way across the box, and then blended into a feature of two capsules or tablets, as appropriate to the form being sold.

In October, 1998, the defendant had commenced marketing a soluble analgesic, with a different active ingredient, namely ibuprofen. This was the first time that ibuprofen was available in soluble form. The product was marketed under the name "Solfen" in a box of approximately the same size as that used for soluble "Solpadeine". The design on the box ran horizontally rather than vertically as was the case with the plaintiffs' product. Over half of the front of the defendant's box had a background of brick red with the word "Solfen" in white. The remainder of the box was an impression of a head which was largely dark blue, and contained a zigzag device across it in yellow which, where it left the head, became a yellow straight line above the word "Solfen".

Mr Justice McCracken said that the plaintiffs were registered owners of a number of trade marks in class 5 for pharmaceutical preparations and substances, and those which were relevant were:

(1) the word "Solpadeine", registered on 10 March 1970.

(2) the word "Solpafen", registered on 27 April 1993.

(3) the zigzag device with two tablets as used on the plaintiffs' product up to 1997, registered on 10 June 1996.

The second of these had never been used, but remained on the register.

The defendant had applied to register the word "Solfen". The word had been accepted by the Comptroller, but its registration was being opposed by the plaintiffs. Mr Justice McCracken said that the word had been registered between 1986 and 1997 by a different owner, but had been removed from the register because of non-use. Prior to the Trade Marks Act 1996, this would have militated strongly against an argument that the re-registration of "Solfen" would amount to an infringement of the other marks. However, section 14(2) of that Act had introduced a totally new concept into the definition of infringement. That sub-section provides:

"A person shall infringe a registered trade mark if that person uses in the course of trade a sign where because: . . . (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the sign with the trade mark."

Mr Justice McCracken said that this concept of "association" had not been considered by the Irish courts, but would certainly seem to envisage an extension of the meaning of "confusion" as used in the Trade Marks Act 1963. The concept came from article 5(1)(b) of Council Directive 89/104/EEC (Trade Mark Harmonisation) and apparently derived from Benelux caselaw. In the case of Union v Union Soleure [1984] BIE 137 it was stated that there was similarity between a trade mark and a sign when, taking into account the particular circumstances of the case, such as the distinctive power of the trademark, the trade mark and the sign, each looked at as a whole and in relation to one another, demonstrate such auditive, visual or conceptual resemblance, that associations between sign and trade mark are evoked merely on the basis of this resemblance. Mr Justice McCracken said that if that was the correct test, there was a serious issue to be tried as to whether there was such a likelihood of association in the present case.

Turning to the question of passing off, Mr Justice McCracken said that many of the elements of the plaintiffs' packaging were present in the defendant's packaging. However, that was not the true test. The court must look at the way in which those individual elements were combined. Mr Justice McCracken said that the definition of passing off which was of most general application was that of Lord Diplock in Warnink v Townsend & Sons (Hull) [1979] AC 731 where he defined the necessary elements as: (1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers of his or customers or ultimate consumers of goods or services supplied by him (4) which was calculated to injure the business or good-will of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which caused actual damage to a business or good-will of the trader by whom the action was brought or (in a quia timet action) would probably do so. Mr Justice McCracken said that the misrepresentation did not have to be fraudulent or intentional, and there was no evidence before him to impugn the motives of the defendant. The case was an unusual one in that the products could only be sold over the counter, that is, only when asked for by name by the purchaser and under the supervision of a qualified pharmacist. They were a halfway house between prescription drugs and drugs which were freely available. The plaintiff had suggested that there was a strong possibility that a customer would not be sure of the name of the product, and confusion could occur. Mr Justice McCracken said that that confusion would be the confusion of the pharmacist, or the carelessness of the pharmacist in not asking further questions, rather than the confusion of the customer purchasing the product. In Sterwin AG v Brocades (Great Britain) Ltd [1979] RPC 481, Mr Justice Whitford took the view that there was no likelihood of confusion in the case of a prescription drug as doctors and pharmacists were trained to take very great care in their work and, if in doubt, to check before acting. But while the plaintiff had a weak case, Mr Justice McCracken said that there was a serious case to be tried on the issue of passing off, and that the next issue to be decided was the question of whether damages would be an adequate remedy.

Mr Justice McCracken said that both parties were substantial and solvent commercial concerns, and would be well able to pay any award of damages. However, the plaintiff had no way of knowing the extent to which it had lost of might lose sales through possible confusion, rather than legitimate business competition. Similarly, the defendant could not calculate the loss it would suffer, when, having marketed a new product, it was forced to take it off the market and re-launch it some months later.

Since damages would not be an adequate remedy for either party, Mr Justice McCracken said that he must look at the balance of convenience. In doing so, he said he would look again at the strength of the plaintiffs case in relation to a possible loss should an interlocutory injunction not be granted. The plaintiffs had sought to support its argument that there was a likelihood of confusion with evidence from a sales representative that he had been told by three pharmacists that they had been confused. However, the defendant had produced affidavits sworn by two of those persons saying that they had not been confused by either the similarity of names or the get up of the packets. This showed the dangers of relying on hearsay evidence.

The plaintiffs had also tendered survey evidence. Mr Justice McCracken said that this was an unsatisfactory way of trying to establish questions of fact which were likely to be matters of dispute, and he cited the judgment of Whitford J in Imperial Group plc v Philip Morris Ltd [1984] RPC 293. Not only were the criticisms made by the defendant of the methodology of the survey apparently valid, but in any event, survey evidence was of little or no value in interlocutory applications where that evidence is not tested by cross-examination, and where the background facts relating to that evidence, such as the actual questionnaires and answers, are not put in evidence. In addition, this survey was taken among members of the public, but it would seem to have little relevance unless it was taken among pharmacists.

Mr Justice McCracken said that the defendant's product had been on the market for five months. If there was no evidence that anybody was confused in the last five months, then there was only a weak case for saying that anybody would be confused pending the hearing of the action. On the other hand, if the defendant was obliged to take its product off the shelves and repackage it, and therefore to re-market it, this could cause an enormous loss in the short term.

The application was refused.

Solicitors: Eugene F. Collins (Dublin) for the plaintiffs; Arthur Cox (Dublin) for the defendant.